Protect your business with a trademark

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods and services of one party from those of another. A trademark owner can use the ® symbol after a registered name, logo, or slogan.

In general terms, a trademark protects a brand. A registered trademark entitles the registrant to a presumption of brand ownership on a national level and a presumed right to use the brand nationwide. It may prevent someone from registering a confusingly similar mark. It may also help a registrant bring a case in federal court if someone infringes on the brand.

You must submit a trademark application with the USPTO to get a registered trademark. For a typical application, be prepared to provide at least the following:

• The actual mark you want to use.
• The full legal name and address of the owner of the mark.
• A copy of the specimen, which is an example that shows you are using the mark in commerce. This could be a picture of your product or a website advertising your service.
• A category of the goods or services where you are using your mark and a description of your goods or services.
• The date you first used the mark in commerce and the date you first shared the mark anywhere.

The whole process will usually take 5 to 10 minutes on the Trademark Engine website.

A trademark can last forever as long as it is used in commerce and renewed on time. To renew a trademark, trademark owners must file maintenance documents with the USPTO between the fifth and sixth years, the ninth and tenth years, and every ten years after that.

Under U.S. law, a common law trademark is generally established when someone uses a company name, logo, or slogan in commerce, even if it is not registered. However, common law rights are ordinarily limited to the geographic area where the mark is used as opposed to the nationwide protection obtained when a mark is registered with the USPTO.

Unless registered, the use of a mark is geographically limited, which limits the ability to expand the brand. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone who offensively registers a similar mark. The person holding the registered trademark also has a leg up in court with the validity of the mark and the date of usage.

Once a trademark is accepted and registered by the USPTO, it will be maintained in the USPTO database and discourage others from using it in the future. Companies will be on notice that the mark has already been spoken for, which helps avoid disputes.

There are advantages to registering a name and an associated logo. However, each filing requires its own government filing fees and processing fees, which can sum up to over $600.

A budget-friendly option is to register just a company name. Wrongful use of names is more common than wrongful use of logos. Trademarking a name generally provides broader protection because it prevents any use of the name that causes confusion, even if someone tries to use the name within a unique logo.

A mark for a logo typically protects the shape, orientation, stylization, and sometimes color of that particular logo. A registered logo prevents others from using that logo or something confusingly similar. If a company name is included in a logo, registering the logo may only protect the use of that name in the particular way it is used in the logo and not the use of the name more generally.

Note that amended or redesigned logos usually require a new application for the new logo. As may be expected, logo changes are more common than name changes.

If investing heavily in a marketing campaign with a slogan, a company might also consider registering a slogan. Short catch phrases or sayings sold as part of merchandise (like shirts or hats) can also be registered.

The slogan should be inherently distinctive and creative or have developed a secondary meaning. In other words, “really good pizza” probably can’t be trademarked unless that saying has become so famous that most consumers associate it with a specific pizza brand.

A domain name does not provide superior trademark rights to use the name in commerce. Instead, domain name availability should be part of a comprehensive search to help evaluate the strength of a brand name or slogan and the likelihood of a trademark being approved. On the other hand, a company could have a trademark name on a product or service without acquiring the domain name.

Using a domain name as part of a brand that sells goods or services may establish common law trademark rights. A “common law” trademark is established when a name, logo, or slogan is used in commerce, even if it is not registered. Common law rights, however, are limited to the geographic area where the mark is used as opposed to the nationwide protection typically established by registering a mark with the USPTO.

General benefits to registering a trademark:

• Nationwide protection
• Presumed right to the exclusive use of the mark nationwide
• Presumed validity of the mark in a lawsuit
• Additional remedies in court
• Potential increase in the value of the company
• Right to use the ® symbol
• Ability to record the mark with the U.S. Customs and Border Protection, which may help stop the importation of infringing or counterfeit goods into the U.S.